Outline of Patent Law Amendment in 2019｜IP Laws & Practices

A bill of a revision of the Japanese Patent Law and others was passed by the Diet on May 10, 2019, and the revised Patent Law and others were promulgated on May 17, 2019.

The outline of the revision is as follows:

1. Purpose of the law revisions ● On account of the digital revolution, industrial boundaries are disappearing and open innovation is in progress. Chances to take a leap forward are expanding for small and medium-size companies along with start-ups with superior technologies, and excellent customer experience is becoming the source of competitive strength.
● In light of these changes, important technologies and others need to be sufficiently protected even in cases of disputes by means of patent rights and others. Therefore, it is intended to improve the litigation system regarding industrial property rights, and to strengthen the design system and others so that design utilizing digital technology is well protected and brand can be built.

2. Summary of the law revisions (1) Partial revisions of the Patent Law
a. Creation of a system for conducting on-site investigations by neutral technical experts
A system is created where, in the case there is a possibility of a patent infringement, a neutral technical expert is entitled to enter a plant or others of an alleged infringer, to conduct an investigation necessary to prove infringement of a patent, and to submit a report to the court.
b. Revisions of the method of calculating damages
(i) A patent holder is entitled to claim damages for the portion of a profit gained by the infringer, for which a claim for damages had been denied for the reason that the portion of the profit was gained on the basis exceeding the production capability of the patent holder, by assuming that a license had been issued to the infringer.
(ii) In calculating the damages equivalent to the license fee, it is explicitly stipulated that the damages expected to be determined by negotiation on the premise that infringement of a patent was in fact committed, could be taken into account.

* Regarding b, revisions of the same effect have been implemented in the Utility Model Law, Design Law and Trademark Law.

(2) Partial revision of the Design Law
a. Expansion of protection targets
Images not recorded or displayed on goods, and designs of appearances and interiors of buildings are additionally protected by the Design Law.
b. Revisions of related design system
* A system that allows registration of a design similar to a design one has applied for, or one’s registered design (present design).
In order to enable protection of a design developed based on a consistent concept:
(i) the application period for a related design is extended from up to the date of publication of registration of the present design (of about 8 months) to within 10 years from the application date of the present design, and
(ii) registration of a design similar only to a related design is allowed.
c. Change of duration of design right
Duration of a design right is changed from “20 years from the registration date” to “25 years from the application date”.
d. Streamlining application procedure for design registration
(i) Allow collective applications of more than one design.
(ii) Abolish classification of goods so that names of goods can be flexibly described.
e. Expansion of stipulations of indirect infringement *
* A system that regards preliminary and contributory actions that are extremely likely to induce an infringement as an infringement.
By stipulating subjective factors such as "knowing that the goods and others shall be used for the implementation of the design", acts of manufacturing, importing and others of goods that infringe a design by dividing the goods into component parts for the purpose of evading law enforcement can be regulated.

(3) Others
Measures shall be taken, such as allowing public interest groups (local governments, universities and others) to license their famous trademark rights to display themselves.

3. Enforcement date Except for some stipulations, the revised law shall be enforced from the date determined by a cabinet order within a period not exceeding 1 year from the day of promulgation.